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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Inc v. Sergey Podyakov (aka herbatel)
1. The Parties
The Complainant is Herbalife
International, Inc., a Nevada corporation with its principal place of business
at Los Angeles, CA, U.S.A. The Complainant is represented by Mr. Mark Chizhenok
of the law firm Gorodissky & Partners, Moscow, Russian Federation.
According to the Response
filed, the true Respondent is Sergey Podyakov of St. Petersburg, Russia.
The Respondent is represented by Mr. Vladimir Dmitriev of Quantum Ltd,
Attorneys of St. Petersburg, Russian Federation.
2. The Domain Name and
The domain name at issue
is <herbatel.com>. The domain name is registered with Tucows, Inc., of
Toronto, Canada ("the Registrar"). The domain name was registered
to Mr. Podyakov on May 15, 2000. However, the registrant of the domain
name as advised by the Registrar is Herbatel, Box 172, Express Post, St Petersburg,
Russia. There is no mention of the Respondent, Sergey Podyakov, in the records
of the Registry.
3. Procedural History
A Complaint submitted by
Herbalife International, Inc., was received on November 30, 2001,
(electronic version) and December 4, 2001, (hard copy) by the World Intellectual
Property Organization Arbitration and Mediation Center ("WIPO Center").
Some minor amendments were made to the Complaint before dispatch to the Respondents
named by the Complainant, viz Dermajetics/Herbatel. The Complaint related to
two names, ie <dermajectics.com> and <herbatel.com>. The Complainant
named as Respondent for both names "Dermajetics/Herbatel" alleging
that there was only one person involved as Respondent in both domain name disputes.
On December 7, 2001,
a request for Registrar verification was transmitted by the WIPO Center to the
Registrar, requesting it to:
- Confirm that a copy of
the Complaint had been sent to it by the Complainant as required by WIPO Supplemental
Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"),
- Confirm that the domain
name <herbatel.com> is registered with the Registrar.
- Confirm that the person
identified as the Respondent is the current registrant of the domain name.
- Provide full contact
details, i.e., postal address(es), telephone number(s), facsimile number(s),
email address(es), available in the Registrar’s WHOIS database for the registrant
of the disputed domain name, the technical contact, the administrative contact
and the building contact for the domain name.
- Confirm that the Uniform
Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current
status of the domain name <herbatel.com>.
By email dated December 7,
2001, the Registrar advised WIPO Center as follows:
- It had received a copy
of the Complaint from the Complainant.
- It is the Registrar of
the domain name registration <herbatel.com>.
is shown as the "current registrant" of the domain name.
- The administrative, billing
and technical contact is Administrator, System, Box 172, Express Post, St. Petersburg,
- The UDRP applies to the
- The domain name registration
<herbatel.com> is currently on "hold" status.
- The Registrar has currently
incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy
("UDRP") adopted by the Internet Corporation for Assigned Names and
Numbers ("ICANN") (hereinafter simply the "Policy").
- The advice from the Registrar
that the domain name in question is on "hold" indicates the Respondent
has not requested that the domain name be deleted from the domain name database.
The Respondent has not sought to terminate the agreement with the Registrar.
Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent
has not challenged the jurisdiction of the Panel.
- Having verified that
the Complaint satisfied the formal requirements of the Policy and the Rules
for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center
on December 18, 2001, transmitted by post-courier and by email a notification
of the Amended Complaint and Commencement of Administrative Proceedings to the
Respondent as named in the Complaint. A copy of the Amended Complaint was also
emailed to the Registrar and ICANN.
- The Complainant elected
to have its Complaint resolved by a single Panelist; it has duly paid the amounts
required of it to the WIPO Center.
- The Respondent was advised
that a Response to the Complaint was required within 20 calendar days.
The Respondent was also advised that any Response should be communicated, in
accordance with the Rules, by four sets of hard copy and by email. The Respondent
Sergey Podykov filed a Response by email on January 8, 2002, and by hard
copy of January 15, 2002. He protested at the joinder of the two domain
names in the one Complaint and disavowed any connection with the domain name
- WIPO Center invited the
Honorable Sir Ian Barker QC of Auckland, New Zealand to
serve as Sole Panelist in the case. It transmitted to him a statement of acceptance
and requested a declaration of impartiality and independence.
- The Panelist duly advised
acceptance and forwarded to the WIPO Center an executed declaration of impartiality
and independence. The Panel finds that the Administrative Panel was properly
constituted in accordance with the Rules and the Supplemental Rules. Upon receipt
of electronic copies of the Complaint and Responses (including a Response filed
in support of the name <dermajectics.com>) the Panelist issued a Procedural
Order which is annexed hereto as Annexure 1. The Panel severed the Complaint
into two, each involving one of the names in the original Complaint. This decision
therefore relates solely to the domain name <herbatel.com>. The Complaint
in relation to the domain name <dermajectics.com> has now been terminated
at the Complainant’s request.
- On January 14, 2002,
WIPO Center forwarded to the Panel by courier the relevant submissions and the
record. In terms of Rule 5(b), in the absence of exceptional circumstances,
the Panel was required to forward its decision by January 28, 2002. However,
because of the matters raised in the Procedural Order and discussed above, the
date for forwarding the decision is extended to February 1, 2002.
- The Panel has independently
determined and agrees with the assessment of WIPO Center that the Complaint
meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns the
trademark "Herbatel" which is registered in the European Community
(No. 001345610) and the United States (No. 2269048). This trademark is used
by the Complainant for long-distance telephone services. The mark is not registered
5. Parties’ Contentions
The disputed domain name
is identical to the Complainant’s trademark.
The Respondent has no rights
or legitimate interest in respect of the disputed domain name because:
- the Complainant did not
authorise the Respondent to use the name;
- the Respondent has no
corresponding trademark registrations for HERBATEL;
- The Respondent does not
have a trade name or a company name similar to the disputed domain name. The
information in Whois about the name of the Respondent should be considered fictitious
since for each domain name the Respondent owns a different name of person is
mentioned while the address remains the same.
- The Respondent has not
been commonly known by the domain name in question nor does the Respondent offer
any particular service or information through the name.
The disputed domain name
was registered by the Respondent in bad faith because of the following:
- The Respondent registered
the domain name in question in order to prevent the Complainant from reflecting
its mark in a corresponding domain name. According to Network Solutions’ WHOIS,
the Respondent has registered more than 100 (one hundred) ".com"
domain names using the address the same or close to that for <herbatel.com>.
- The way the Respondent
used the disputed domain names cannot be considered as bona fide offering of
goods and services. The catalogue of WWW resources that was presented at the
website is a simple compilation of links to commonly-known Russian recourses.
This web catalogue may be compiled in two minutes by every frequent user of
the Russian internet. The said web catalogue may be seen now under most of the
other domain names referred to above (some of them marked "For sale").
The website also presents nothing special (only imported news-string and web-form).
The same content may be found under other domain names of Respondent.
The domain name <herbatel.com>
was registered by a Californian company on March 9, 1998. The application
by the Complainant for trademark registration was first made on July 20,
1998, and was used in commerce by the Complainant only since May 1998.
Hence the domain name has been used in commerce prior to the first use of the
The Respondent has for
a long time specialized in the raising, cultivation and sales of medicinal herbs,
he has a great interest in collecting plants, and is nicknamed "Herbatel"
in English spelling. He has been commonly known by this name as an individual.
The word "Herbatel" is derivative from the noun "Herb" (in
Russian herbarium) with the suffix "tel" meaning a person occupied
in a definite kind of activity (like the suffix "-er" in the words
In 1999 the Respondent
wished to found his own business for raising, cultivating and selling herbs
in medical purposes. He then discovered the domain name <herbatel.com>
In 2000, the Respondent
applied to "ExpressPost" (a domain name Registrar in Russia) to register
the domain name. This company granted him a temporary mailing address (P.O.
172, ExpressPost, Saint-Petersburg, 193015, Russia) and informed him that the
domain name <herbatel.com> was free as of May, 2000. He then registered
the domain name and started preparations for organizing his own business. For
that purpose he registered several more domain names (e.g. >herbatel.spb.ru>).
In November, 2001, the establishment of this business was suspended due to lack
It is a commonly known
practice for companies registering domain names for their clients to provide
standardized content for their websites, also known as modules or parking pages.
Such technique is used by the leaders of the market like Verisign, Inc. or Register.com,
Inc. The website content in this case is provided usually for free or for a
small fee offering a temporary solution for clients developing their websites.
Thus hundreds or thousands of websites can share the same or similar content.
This common practice cannot lead to the conclusion that a domain name holder,
using standardized content for its website, acts in bad faith.
Thus, the Complainant has
failed to prove that the Respondent Sergey Podyakov has no rights or legitimate
interest in the domain name <herbatel.com> and that the domain name <herbatel.com>
has been registered and used in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the
Rules instructs the Panel to:
"decide a complaint
on the basis of the statements and documents submitted in accordance with the
policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant,
under paragraph 4(a) of the Policy, is to show:
- That the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
- That the Respondent has
no legitimate rights or interests in respect of the domain name; and
- That the domain name
has been registered and used in bad faith.
The disputed domain name
is identical to the Complainant’s mark. The Respondent’s claim that the domain
name was originally registered before the Complainant applied for its mark is
irrelevant because the Respondent was not the registrant at the time. One cannot
speculate on the reason why the Californian first registrant registered the
name. The focus on the time is when this Respondent registered the name, and
his motivations at that time. Significantly, he has not chosen to disclose why
the name was not registered in his own personal name but in the name of "herbatel".
As to whether the Respondent
has any legitimate rights, the Complainant gave him none. However, Paragraph
4(c) of the Policy allows a Respondent to rely on, inter alia, (a) a claim
that Respondent is commonly known by the disputed domain name and/or (b) Respondent
has made demonstrable preparations to use the disputed domain names in connection
with a bona fide offering of goods and services. Although the Response
is somewhat confused, the Respondent appears to rely on both the above.
The evidence that Respondent
is commonly known by the name "herbatel" is spartan in the extreme.
There is no affidavit from him or anybody else verifying this broad assertion.
Nor is there any evidence from some expert in the Russian language to support
the linguistic argument asserted. The Panel finds that Respondent fails to supply
sufficient evidence that he comes within this provision of Paragraph 4(c).
Likewise, the claim that
Respondent had made demonstrable preparations to use the disputed domain name
in connection with a bona fide offering of service is fatally weak. The evidence
of demonstrable preparation, apart from the Respondent’s unsubstantiated assertion,
comes down to the mere registration of the name and acceptance of a module of
a website provided by ExpressPort. There is not shown any attempt to develop
the website. Nor is there any indication of how or what goods were to be marketed
on the website.
Accordingly, the Complainant
has discharged its onus on the second criterion.
As to bad faith, there
is no allegation that the Respondent in Russia was ignorant of the Complainant’s
marks registered in the European Community and the United States. The fact that
Respondent has registered other names with "herbatel" overtones indicates
that he well knew of the Complainant. Indeed, if he were an authority on herbal
remedies (as he asserts), one can infer that he must have heard of the Complainant.
The fact that he purchased the name indicates a lack of enquiry or a reckless
disregard for Complainant’s possible trademark rights. The fact that he purchased
the domain name other than in his own name indicates a desire not to be readily
associated with the name.
The lack of development
of the website indicates continuing bad faith particularly, if, as Respondent
alleges, he was financially unable to complete the website. One has to wonder
why he wishes to retain the name in these circumstances.
Accordingly, the Panel
finds the third criterion proved.
For the foregoing reasons,
the Panel decides:
(a) That the domain name
registered in the name of "herbatel" is confusingly similar to the
trademark to which the Complainant has rights; and
(b) That neither the Respondent
nor "herbatel" (i.e. the domain name registrant) have any rights or
legitimate interests in respect of the domain name; and
(c) That the domain name
has been registered and is being used in bad faith.
Accordingly, pursuant to
paragraph 4(i) of the Policy, the Panel requires that the registration of the
domain name <herbatel.com> be transferred to the Complainant.
Ian Barker QC
Dated: January 28,
WIPO Arbitration and Mediation Center
PROCEDURAL ORDER NO. 1
Herbalife International, Inc., v dermajetics.com and herbatel.com
Case No. D 2001-1419
Case No. D2002-0154
1. A Complaint was filed
with the WIPO Arbitration and Mediation Center ("the Center") on November
30, 2001, by Herbalife International, Inc., of Century City, California, USA.
The Complaint concerned two Domain Names, <dermajetics.com> and <herbatel.com>.
2. The Respondents cited
by the Complainant were "herbatel.com" of Box 172, St Petersburg,
Russia, and "dermajetics.com" of Box 544, St Petersburg, Russia.
3. The Complainant alleged
"that the same Respondent hides behind these two addresses because of the
"- both domain
names were associated with common name-server ns.neonet.com 188.8.131.52 (at
least till September 12, 2001, see Annex 2);
- there were the same
content on the web-servers for these two domain names (at least till June 04,
2001, see Annex 3);
- disputed domain names
are only a small part of the huge domain name pool (about 200 domain names),
the Whois record of which shows the same name-server and contact details as
mentioned above (see Annex 4)."
4. After obtaining Registrar
verification (from a different Registrar for each name) the Center requested
certain amendments to the Complaint. An amendment to the Complaint was filed
by the Complainant on December 11, 2001 (email) and December 14, 2001 (hard
copy). This Complaint was then sent by the Center to the addresses referred
to in paragraph 2 above with the usual notifications to Respondent.
5. On January 8, 2002,
a Response was filed (by email and fax only and not by hard copy) by Sergey
Podyakov "also known as Herbatel" in respect of the Domain Name <herbatel.com>
only by a law firm on his behalf. The hardcopies were received by the Center
on January 15, 2002.
6. On January 9, 2002,
a Response was filed (by email and fax and not by hard copy) by "OOO Artema"
in respect of the Domain Name <dermajetics.com> only. The same law firm
as acted for Sergey Podyakov filed this Response. The hardcopies were received
by the Center on January 15, 2002.
7. Both Respondents asserted
that they were not connected and objected to the joinder of the two Domain Names
in the one Complaint. Counsel referred to Rule 4(c) of the Policy.viz. "The
complaint may relate to more than one domain name, provided that the domain
names are registered by the same domain-name holder".
8. On January 9, 2002,
the Complainant sought leave to file supplementary submissions on the grounds
that some of the allegations in the Responses were untrue.
9. The Panel considers
that the Complainant has not proved that, as at the date of filing of the Complaint,
the two domain names were registered by the same domain name holder. The evidence
presented by the Respondents suggests otherwise.
10. The Panel further considers that since both Respondents have filed Responses,
no injustice is done by severing the two Complaints and considering them separately
on the information supplied by the parties. A similar decision was reached by
the learned Panelist in WIPO Case No. D2000-0836
which this Panel follows with approval.
11. The Complainant has shown no particular reason why the administrative process
should be prolonged by its filing of a further pleading. I adopt, in this case,
the reasoning on this aspect of the learned Panelist in WIPO
Case No. D2000-0596 on the filing of additional material.
12. In view of the foregoing,
the Administrative Panel hereby orders as follows:
Case D2001-1419 shall be
severed into two separate administrative proceedings as follows:
(a) D2001-1419A - Herbalife
International Inc v Sergey Podyakov
[The Center subsequently numbered this case D2001-1419.]
(b) D2001-1419B - Herbalife
International Inc v OOO Artema.
[The Center subsequently numbered this case D2002-0154.]
13. The Complainant is
required to pay an additional USD1,500 corresponding to a filing fee for case
D2001-1419B by no later than seven (7) calendar days following the notification
of Procedural Order No. 1 to the Parties. In the event that the Complainant
fails to make the requested payment, Case No D2001-1419B as presently filed
shall be considered terminated.
14. There shall be no further
written submissions in either of the cases, except as specifically directed
by the Administrative Panel following further review of the case records.
15. In view of the presence
of exceptional circumstances, the deadline for the issuance of the Panel’s decisions
in both cases is postponed to February 1, 2002, as permitted by Paragraph 10(c)
of the Rules.
16. The Center is directed
to distribute this request to the Complainant via its authorized representative
and to the Respondents at all known e-mail addresses.
Ian Barker QC